North American Medical Corporationv.Axiom Worldwide, Inc.

Trademark Trial and Appeal BoardJul 10, 2014

No. 91171054 (T.T.A.B. Jul. 10, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: July 10, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ North American Medical Corporation v. Axiom Worldwide, Inc. _____ Opposition No. 91171054 to Application Serial No. 78560991 _____ North American Medical Corporation, pro se1 David Z. Petty of McAndrews Held Malloy for Axiom Worldwide, Inc. _____ Before Quinn, Kuhlke and Taylor, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Applicant, Axiom Worldwide, Inc., seeks registration of the standard character mark WE SELL SCIENCE for services identified as: Medical devices and systems, namely non-surgical diagnostic and treatment devices and systems comprising 1 North American Medical Corporation acted in this proceeding initially through its attorneys. Prior to trial, Opposer changed its correspondence address and proceeded pro se through its officer and senior vice president Gidgette Rubin. See Patent and Trademark Office Rule 11.14(e)(3), 37 C.F.R. § 11.14(e)(3); TBMP § 114.01 (2014). Opposition No. 91171054 - 2 - spinal decompression units, bone densitometers and non- surgical laser therapy machine, in International Class 10; Wholesale distributorship of medical, non-surgical diagnostic and treatment devices and systems, in International Class 35; and Custom manufacturing of medical, non-surgical diagnostic and treatment devices and systems to the order and specification of others, in International Class 40.2 Opposer, North American Medical Corporation, has opposed registration of Applicant’s mark on the ground that as used in connection with Applicant’s services, the mark so resembles Opposer’s previously used mark WE SELL SCIENCE, which is used in connection with the manufacture, distribution, and sale of medical, non-surgical diagnostic and treatment devices and systems, as to be likely to cause confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). By its answer, Applicant denied the salient allegations. RECORD By operation of the Trademark Rules, the pleadings herein and the file of the subject application are of record.3 Trademark Rule 2.122, 37 C.F.R. § 2.122. Applicant did not submit any testimony or other evidence. Opposer has filed a brief on the case. Applicant has filed no brief. Even though Applicant has filed no 2 Application Serial No. 78560991, filed on February 4, 2005, under Section 1051(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on allegations of first use and first use in commerce on July 31, 2004. 3 We note Opposer’s objection to the dates of use and the specimen in the application file as not being sufficient to prove use. The objection was unnecessary as this concept is codified under Trademark Rule 2.122(b)(2) which provides that “a date of use is not evidence on behalf of the applicant or registrant; a date of use of a mark must be established by competent evidence. Specimens in the file of an application for registration, or in the file of a registration, are not evidence on behalf of the applicant or registrant unless identified and introduced as exhibits during the period for the taking of testimony.” Opposition No. 91171054 - 3 - evidence or brief, Opposer, as plaintiff in this proceeding, must nonetheless prove its standing and its claims by a preponderance of the evidence. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998); and Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989). During Opposer’s trial period as last reset, on April 24, 2013, Opposer filed the affidavit of Gidgette Rubin, Opposer’s officer and Senior Vice President. Although presented as Opposer’s “Trial Testimony” there is no stipulation of record allowing for testimony by affidavit. Absent an agreement in writing by the parties allowing testimony to be submitted in the form of an affidavit, testimony must be taken by deposition upon oral examination in accordance with 37 C.F.R. § 2.123, or by deposition upon written questions in accordance with 37 C.F.R. § 2.124. See also TBMP § 703. An adverse party must be afforded a full opportunity to cross-examine the witness. 37 C.F.R. §§ 123(e)(3) and 124(d). While Applicant has not raised an objection to the testimony in the form of an affidavit neither did Applicant affirmatively waive such objection. Where one party remains silent, as in the present case, the rule’s requirement of a “written agreement” has not been met. Where parties improperly introduce or submit non-conforming evidence such evidence “will not be considered even if the adverse party does not specifically object to it, as long as the adverse party does not specifically treat it as of record such that we can say it has been stipulated into the record.” Calypso Technology, Inc. v. Calypso Capital Management, LP, 100 USPQ2d 1213, 1216 (TTAB 2011). Cf. Hilson Opposition No. 91171054 - 4 - Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1425 n. 8 (TTAB 1993) (objection waived where although there was no such agreement, plaintiff did not object to declarations with exhibits submitted by defendant and treated the evidence as if properly of record). Accordingly, we may not and have not considered the affidavit of Gidgette Rubin. Nonetheless certain of the exhibits are appropriate matter for submission under notice of reliance (printed publication or internet printout with URL and date, or official record) and the following exhibits have been considered.4 Exhibit 4 One excerpt from a printed publication titled American Academy of Pain Management dated September 2004 showing Opposer’s advertisement for a medical treatment device using the mark WE SELL SCIENCE including the company contact number and website address; Exhibits 5(a) – 5(c) Three excerpts from a printed publication titled The Pain Practioner one dated Summer 2005 showing use of Opposer’s mark in advertising for a medical treatment device (5a), one where the date is illegible showing Applicant not using the mark in its advertisement (5b) and one in the Spring 2006 issue showing Applicant not using the mark in its advertisement (5c); Exhibit 7 A printout from the waybackmachine website showing an archived version of Opposer’s website from 2006 (the mark does not appear on the page); and Exhibit 8(b) An official record from the State of Florida Department of State: Certificate of Administrative Dissolution for Axiom Worldwide, LLC dated June 24, 2010. 4 The remaining exhibits which consist of communications (letters, emails, press releases) (Exhibits 1, 3, 8(a)), a poster display (Exhibit 2), possibly a brochure (Exhibit 7b), business cards (Exhibit 7(c)) and what may be an internet printout without a URL and/or date (Exhibit 6) are not proper matter for introduction under a notice of reliance. Opposition No. 91171054 - 5 - Finally, the material attached to Opposer’s brief is untimely and may not be considered. Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1116 (TTAB 2009). See also TBMP § 704.05(b) and cases cited therein. STANDING/LIKELIHOOD OF CONFUSION As plaintiff in this proceeding, Opposer bears the burden of proving its standing and claim. Further, inasmuch as Opposer has not pleaded and submitted a registration, Opposer must prove its standing and prior proprietary rights in the asserted mark WE SELL SCIENCE. The purpose of the standing requirement is to prevent mere intermeddlers from initiating proceedings. The Federal Circuit has enunciated a liberal threshold for determining standing, namely, whether a plaintiff’s belief in damage has a reasonable basis in fact and reflects a real interest in the case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., DBA Watermark Cruises, 107 USPQ2d 1750 (TTAB 2013), aff’d, Chesapeake Marine Tours, Inc. v. Alcatraz Media, Inc., __ Fed. Appx. __ (Fed Cir. 2014). See also Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987); and Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Under this liberal standard, Opposer has shown a reasonable interest in this proceeding and a reasonable basis for its belief that it will be damaged, by virtue of the 2004 and 2005 advertisements for its medical devices under the WE SELL SCIENCE mark. In view thereof, Opposer has established its standing. Opposition No. 91171054 - 6 - However, these advertisements are not sufficient to establish priority. Actual trademark use on goods requires a bona fide sale or transportation of the goods in commerce. See Section 45 of the Trademark Act, 15 U.S.C. § 1127. The advertisement standing alone is not sufficient for that purpose and as noted above we may not consider statements (or the truth thereof) made in the affidavit. Nor is this or the two combined advertisements in the trade journals sufficient to show use analogous to trademark use, which requires a showing of an open and public use of such nature and extent as to create, in the mind of the relevant purchasing public, an association of the designation with the plaintiff’s goods. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). See also T.A.B. Systems v. PacTel Teletrac, 77 F.2d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996). While the 2004 publication date in Exhibit 4 precedes the application filing date of February 4, 2005, the only date upon which Applicant may rely absent proof of the alleged use dates, we have no testimony as to the extent of distribution of the trade publication or how many consumers it may have reached such that we could infer that the use was sufficient to create in the minds of the relevant public an identification of WE SELL SCIENCE with Opposer’s goods. Thus, based on this record, Opposer did not prove that it is the owner of “a mark or trade name previously used in the United States … and not abandoned.” 15 U.S.C. § 1052(d). Having failed to prove a prior proprietary right in a mark or name, Opposer cannot, as a matter of law, prevail in its claim under trademark Act § 2(d). See Herbko Opposition No. 91171054 - 7 - International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). Opposer argues in its brief that “Applicant knowingly and fraudulently filed for Opposer’s owned mark [and the mark] will also be the cause of … dilution”; however, these claims are not pleaded as further grounds for relief in the notice of opposition, and we cannot consider them at this juncture.5 Syngenta Crop Protection Inc., 90 USPQ2d 1112. Even if these issues were considered, however, Opposer has not properly introduced evidence on such claims. Opposer also argues in its brief that Applicant did not serve discovery responses or respond to any USPTO notices regarding this proceeding (other than the answer) and Applicant’s failure to use the mark or to defend the application during the opposition process indicates an “abandonment of any interest in pursuing the mark registration” and “a loss of interest in the mark.” Opp. Br. pp. 5, 9. Opposer asserts that Applicant’s failure “to produce any tangible proof of any genuine intent to use the mark in commerce at the time of filing the application establishes a prima facie case of no bona fide intent to use the mark.” Opp. Br. p. 10. Again, this claim was not pleaded and will not be considered. In addition, there is no evidence properly of record to satisfy Opposer’s burden to establish a prima facie case on this claim. Failure to respond to Board orders is not evidence of no bona fide use or abandonment. With regard to Applicant’s asserted failure to respond to discovery, 5 We further note the reference to Section 43(a), 15 U.S.C. § 1125(a) is misplaced inasmuch as the Board does not have jurisdiction of claims under that specific section. Compare Sections 13(a) and 43(c), 15 U.S.C. §§ 1063(a), 1125(c). Opposition No. 91171054 - 8 - Opposer did not make its discovery requests of record and we may not consider statements in the affidavit regarding any possible failure on the part of Applicant to respond to discovery requests regarding its use of the mark to establish Opposer’s prima facie case. Finally, Opposer requests the Board “accept as true the factual allegations of the complaint and draw all inferences in favor of the pleader.” Opp. Br. p. 9 quoting Mills v. Polar Molecular Corp., 12 F.3d 1170, 1174 (2d Cir. 1993). Opposer carefully omits the beginning of that sentence which reads “When we review the grant of a motion to dismiss under Rule 9(b) or Rule 12(b)(6).” Id. (emphasis added). Clearly, that standard is for a motion to dismiss which is only a review of the pleadings, not whether a plaintiff has proven its case at trial. Decision: The opposition is dismissed.